Summary: CAFC reversed district court’s finding of nonobviousness.

Case: Allergan, Inc., v. Apotex Inc., No. 2013-1245,-1246,-1247 (Fed. Cir. June 10, 2014) (precedential). On appeal from M.D.N.C. Before Prost, Reyna, and Chen.

Procedural Posture: Defendants-accused infringers appealed from final judgment of infringement and validity. CAFC reversed and vacated.

  • Claim Construction: The district court correctly construed the term “treating hair loss.” Reading the term in light of the whole specification, “treating hair loss” may include a method of promoting hair growth without also arresting or reversing hair loss.
  • Anticipation: The district court correctly held the patent not anticipated by the prior art. The district court’s determination that the prior art’s disclosure was too sparse and ambiguous to anticipate was not clearly erroneous.
  • Obviousness: The district court’s judgment that claims were not obvious was reversed. The district court erred by failing to take into account the full scope of the inventions, by finding the prior art’s mere disclosure of alternative preferences taught away from the compounds claimed, and by relying on the unpredictability of the hair growth field in general, rather than unpredictability of the hair growth field as applied to the claims.
  • Conception: The district court committed clear error when it found a reference to not be prior art because the reference published later than the patentee’s claimed invention date. The inventor’s testimony regarding a pre-filing date of conception was not corroborated by documents describing the claimed invention and thus not entitled to the earlier priority date.
  • Printed Publication: The Federal Circuit held that a reference was prior art under 35 U.S.C. § 102(a) because the evidence did not show that the reference was solely the inventor’s own work.
  • Obviousness: The Federal Circuit held claims were obvious because the prior art disclosed the claimed invention and a substantial motivation to combine.

Chen dissenting:

  • Obviousness: The prior art’s teachings are too vague and equivocal to justify invalidating the patent, and thus the district court’s findings of non-obviousness should be affirmed.

Nathaniel DeLucia